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December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

INTA Board Supports “Application Approach” in U.S. Copyright Cases


On November 7, 2017, the INTA Board of Directors adopted a resolution supporting the “application approach” over the “registration approach” in U.S. copyright cases. The resolution was proposed by the Enforcement Subcommittee of INTA’s newly formed Copyright Committee, which will complete its inaugural term at the end of this year. The resolution, the full text of which can be found here, was presented by Dale Cendali (Kirkland & Ellis, LLP, USA), Chair of the Copyright Committee, and Jason Bloom, Vice Chair of the Enforcement Subcommittee.

Background

U.S. Circuit Courts have long been split on an important question impacting copyright claimants and brand owners (more on this below): when can a copyright infringement suit be filed? The U.S. Copyright Act, unlike most countries’ copyright regimes, requires a copyright claimant to register its copyright with the U.S. Copyright Office before it can file a copyright infringement lawsuit. Under general procedures, a claimant can register a copyright by filing an application, paying a small fee (US $55, in most cases), and submitting the material to be registered to the Copyright Office. Then, the Copyright Office will either issue or refuse to issue a registration certificate within six to 15 months.

Due to ambiguity in the statute, some courts will allow a copyright claimant to file suit against an infringer immediately after submitting the application, fee, and deposit materials to the Copyright Office, without having to wait several months for the Copyright Office to issue (or refuse) a registration certificate. This is known as the “application approach.” Other courts require a copyright claimant to receive a registration certificate (or denial) from the Copyright Office before filing a copyright infringement lawsuit. This is known as the “registration approach.”

The “registration approach” adopted by several U.S. Circuit and district courts can be detrimental to copyright claimants that do not already own a copyright registration and cannot afford to wait six to 15 months for a registration certificate to issue (or be refused) before proceeding with a lawsuit. For example, when a copyright claimant seeks to: enjoin an infringing advertisement that will run in five days, stop the sale of an infringing product that will launch in a week, or seize and impound infringing articles that will be shipped out of the country at any moment, waiting several months for the Copyright Office to act on a copyright application will not suffice. Such delay makes even less sense in light of the fact that, under the “registration approach,” a copyright claimant can proceed with a lawsuit even if the Copyright Office ultimately declines to issue a registration certificate. Moreover, while courts and litigants receive some benefit from knowing the Copyright Office’s position on copyrightability prior to the commencement of litigation, copyright registrations are issued about 98 percent of the time, making the delay seem all the less reasonable.
  
While the Copyright Office will endeavor (but not guarantee) to issue a registration certificate in about five working days if the claimant pays a US $800 “special handling” fee, the “special handling” fee can be burdensome to some claimants (especially those seeking to register a large number of works), and even a five-day delay can be detrimental in some cases. Additionally, the “registration approach” does not sync well with the Berne Convention, which is an international treaty designed to make securing and enforcing copyright interests as simple as possible, with minimal administrative burdens.

Based on the above reasons, the Enforcement Subcommittee proposed and the INTA Board resolved, that the “application approach” should be universally adopted by U.S. courts. Notably, this very issue has recently been petitioned to the U.S. Supreme Court in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com, 856 F.3d 1338 (11th Cir. 2017), petition for cert. filed (U.S. Aug. 4, 2017) (No. 17-571).

Importance of Issue to Brand Owners

Although the copyright application versus registration debate may not, at first glance, appear to be of much interest to brand owners, the fact is that copyright law can serve as a very valuable brand protection tool.

There are several areas, such as logos and designs, in which trademark and copyright protection can overlap, and the ability to assert a copyright claim in addition to a trademark claim against an infringer can provide valuable leverage and additional remedies. Moreover, a copyright owner is not required to prove likelihood of confusion to prevail on a claim, which can result in a higher likelihood of litigation success for brand owners.

Additionally, even when overlapping rights to logos and designs are not involved, there are many instances when a trademark infringer is simultaneously infringing copyrighted text (such as instructions), photos, or other content. In such cases, it is beneficial to be able to assert promptly both copyright and trademark claims against an infringing party.

Because many brand owners are more diligent about registering their trademarks than copyrighted material, the “application approach” would enable brand owners to promptly submit an application, deposit, and fee and then immediately pursue infringers for copyright and trademark infringement. The “registration approach” could require brand owners to either (i) wait several months to pursue their claims; (ii) only assert trademark claims; or (iii) pay a high fee for “special handling.” None of these choices is ideal. The “application approach” supported by the resolution is therefore more beneficial to brand owners than the “registration approach.”

Conclusion

The passage of this Board resolution was an important accomplishment for the Copyright Committee in its inaugural term, and highlights the importance of copyright law to brand owners. View the full text of the resolution here.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2017 International Trademark Association